The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Billy Stallings, The Spa Guy, Inc of Hendersonville, Tennessee, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2017. On May 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on May 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2017. On June 2, 2017, the Center received a request for suspension from the Complainant, and the proceeding was suspended on the same day. On June 29, 2017, the Complainant requested to reinstitute the proceeding, and subsequently the proceeding was reinstituted by the Center on June 29, 2017.
The Center appointed Michael D. Cover as the sole panelist in this matter on July 12, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is part of the Grundfos Group, a pump manufacturer established in 1945. The Complainant was founded by Mr. Poul Due Jensen and is ultimately owned by Poul Due Jensen’s Foundation. The Complainant (and other companies in the Grundfos Group) is the proprietor of the trademark GRUNDFOS in many countries and jurisdictions. For instance, the Complainant is the owner of the Danish Trademark Registration No. VR 1946 01968, GRUNDFOS, registered on December 14, 1946.
The Disputed Domain Name was registered on May 18, 2010. According to the evidence submitted with the Complaint (Exhibit 21 to the Complaint), the Disputed Domain Name redirects to another website, where apparently GRUNDFOS-branded pumps are displayed for sale.
The Representatives of the Complainant had sent a cease and desist letter to the Respondent dated March 20, 2017, to which no response was received. 5. Parties’ Contentions A. Complainant
Confusingly Similar
The Complainant submits that its GRUNDFOS trademark is well-known. It states that the trademark GRUNDFOS has already been held in two previous UDRP decisions to be a well-known trademark and cites Grundfos A/S v. Orion Web,WIPO Case No. D2005-0618 (Exhibit 4 to the Complaint); and Grundfos A/S v. Jan Svoboda,WIPO Case No. D2009-0526 (Exhibit 5 to the Complaint).
The Complainant states that what it describes as the Grundfos Group is one of the largest and leading manufacturers of pumps in the world, producing over 16 million pumps per year, with a turnover of USD 4.1 billion.
The Complainant states that the Grundfos Group includes more than 80 companies around the world and that all 80 companies in the Grundfos Group use the GRUNDFOS trademark. The Grundfos Group, states the Complainant spends very considerable sums on advertising, marketing and promoting its products sold under the trademark GRUNDFOS. The Grundfos Group operates several websites, including at “”.
The Complainant states the trademark GRUNDFOS is extensively registered around the world, as set out in Exhibit 18 to the Complaint. The Panel notes that these trademarks are variously registered in the name of Grundfos A/S and Grundfos GmbH and the Complainant, with a substantial number being registered in the name of the Complainant.
The Complainants submits that the Disputed Domain Name is confusingly similar to the Complainant’s well-known GRUNDFOS trademarks. The Complainant notes that the Disputed Domain Name is structurally and phonetically deceptively similar to the GRUNDFOS trademark. It also notes that the Disputed Domain Name integrates the GRUNDFOS trademark with the seven letter suffix “spapump” and the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that the Disputed Domain Name merely consists of the Complainant’s trademark GRUNDFOS and the addition of “spapump” as a suffix at the end of the word “grundfos” and that this does not negate the confusing similarity encouraged by the complete integration of the GRUNDFOS trademark in the Disputed Domain Name.
The Complainant notes that the Disputed Domain Name resolves to another website, where the Complainant’s pumps are displayed. This is not authorized by the Complainant and this is further set out in Exhibit 21 to the Complaint.
The Complainant concludes that the Disputed Domain Name is confusingly similar to the Complainant’s trademark GRUNDFOS.
Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Complainant notes that the Respondent is not an authorized dealer, reseller or repairer of the Complainant’s products and that the Complainant and the Respondent are not co−operating in any way.
The Complainant continues that the Respondent is in fact falsely identifying his business as connected with the Complainant and states that the Complainant has shown prima face evidence of the absence of rights or legitimate interests and that the burden of production shifts to the Respondent.
Registered and Used in Bad Faith
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. As the trademark GRUNDFOS is well-known, it was registered long before the Respondent's registration of the Disputed Domain Name and the Disputed Domain Name redirects to a website where GRUNDFOS-branded pumps are promoted, the Respondent was aware of the GRUNDFOS trademark rights when the Disputed Domain Name was registered.
In addition, the Complainant notes that the Disputed Domain Name is being used solely to divert consumers to a website which gives the impression that it is part of the Complainant’s group of companies.
The Complainant concludes that the Disputed Domain Name has been registered and is being used in bad faith.
Remedy Requested
The Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established registered rights in its GRUNDFOS trademark. The Complainant owns a number of registered trademarks consisting of or including this element. Substantial use has clearly taken place over many years of that trademark but it is not clear which corporate entity has undertaken that business and therefore to which corporate entity the common law rights belong. However, the registered rights that are owned by the Complainant are sufficient.
The Panel also accepts the Complainant’s submission that the Disputed Domain Name is confusingly similar to the Complainant’s trademark GRUNDFOS. “Grundfos” is the dominant feature of the Disputed Domain Name. It is well established the addition of a gTLD or other non-distinctive element, such as “spapump” is not sufficient to avoid confusing similarity.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark GRUNDFOS and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out its prima facie case and accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Panel notes that the Complainant has not authorized or licensed the Respondent to use the GRUNDFOS trademark and that the Respondent is not affiliated to the Complainant. There is no evidence that the Respondent was commonly known by the Disputed Domain Name, so those avenues are not available to the Respondent. The use of the Disputed Domain Name consists of a redirection to a website not connected with or authorized by the Complainant but which apparently offers the Complainant’s products. Even if the products on the website were genuine Complainant’s products, there is no disclaimer on the website disclosing the relationship between the Respondent and the Complainant. The Panel notes that this use of the Disputed Domain Name cannot be considered as legitimate, noncommercial or fair use.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel accepts the submissions of the Complainant on this head and finds that the Disputed Domain Name has been registered and is being used in bad faith. In view of above, it is a reasonable inference that the Respondent was aware of the Complainant’s well-known GRUNDFOS trademark when he registered the Disputed Domain Name. The Panel also finds that the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion.
The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, , be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: August 2, 2017
Full & Egal Universal Law Academy